EP 3 603 191 A1, published as WO 2018/182418, relates to an intra ear canal hearing aid.
Brief outline of the procedure
The application was refused as the MR and AR1+2 were not in compliance with Art 83. Other AR were not admitted under Art 137(3).
The applicant appealed.
The board confirmed the refusal under Art 83.
The board held that the OD did not commit a SPV.
The case is interesting in the argumentation brought forward by the applicant.
The applicants’ point of view
Alternative benchmarks
The applicants brought forward alternative benchmarks, e.g. students, specific experts, “attorney performance when drawing a figure based on the claims” when arguing sufficiency of disclosure.
The provisions of the PCT or its Regulations prevail
The applicants argued that, according to Art 150(2) EPC, in case of conflict, the provisions of the PCT or its Regulations shall prevail.
The applicants argued that for a same set of claims, as is the case for the present EP-Application, the parallel US-application, and the parallel CN-application, and for the same description, in view of amongst others Art. 5-6 and R. 5-6 PCT, the outcome before the National Offices must be substantially the same.
If, as in the present case, one of the Patent Offices, the EPO, has another outcome than the other Patent Offices, the USPTO and CNIPA, there a conflict under Art. 150 EPC.
Not replying to the objections under Art 83
As far as the MR is at stake, the applicants never entered in a discussion on Art 83, and claimed that the US and CN offices concluded that the subject-matter of claim 1 of the MR was novel and inventive.
The grounds for refusal were only dealt with from AR1 onwards. In this respect reference was made to G 2/21, T 0934/19, and concluded that the invention as defined by claims 1 and 10 is disclosed in a manner sufficiently clear for it to be carried out by a skilled person.
They further concluded that the skilled person is quite capable of filling in any gaps that might be present in the claimed invention so that sufficiency of disclosure is given. They added that their own arguments were, in view of the capabilities of the skilled person, fully in line with T 0934/19.
Application of the PPH
As far as AR2 is concerned, the applicant considered that the provisions of the Patent Prosecution Highway apply.
The Chinese Patent Office has granted a Chinese Patent based on the PCT-claims as filed on 2021-12-10 under patent number CN110574392 (B).
The US Patent Office has granted a US Patent based on the PCT-claims as filed on 2022-01-11 under patent number US11223911 (B2).
Hence, the material provisions for participation under the PPH were met.
The goal of the PPH is the provision of a programme to fast-track patent examination. It allows to request accelerated processing of a European application if the claims have been deemed patentable/allowable by another office. At the same time, it enables the EPO to re-use the work done at other offices.
The applicants could therefore not understand that clarity objections, and likewise sufficiency of disclosure objections, could be made in one jurisdiction, as in the EP, and not in any of the other jurisdictions, as in the US or China, respectively.
In addition, in the international phase none of the later objections were made, by the EPO as ISA.
A potential violation of the right to be heard
As far as AR3 the applicants considered that, in summary, the OP did not follow the order of the requests on file, and were considered rather chaotic, in particular as to the status of the requests and objections, which were often summarised as “not convincing”.
On the substance
The appellants considered that that the combination of figures 10 and 14 would be immediately apparent to a professional representative or an undergraduate student.
To resolve the issue with the missing “output filter” in Figure 14, the appellants stated that the skilled person would immediately understand that the transducer (271) shown in Figure 14 inherently incorporated the “output filter” shown in Figure 10 as a simplified block.
The appellants argued that relying on the separation between the “output filter” and the “transducer” constituted a purely “literal reading” and that the skilled person would adopt a broader interpretation.
The board’s decision
Alternative benchmarks
Regarding sufficiency of disclosure, the board confirmed that the reference person in this context is the “person skilled in the art” as expressly enshrined in Art 83 and as correctly applied in the appealed decision.
This reference person does not relate to any of the ones suggested by the appellants.
The outcome of other procedures
The granting of a different European patent by a different ED of the EPO or of another patent by the USPTO has certainly no binding effect on the board’s objective assessment of the present application.
Similarly, the fact that the present application has been cited as prior art by the EPO in other patent proceedings, e.g. EP 4 058 137 as referred to by the appellants, merely indicates that its textual contents form part of the state of the art.
It does not establish that the specific combination of features claimed in the present main request is sufficiently disclosed within the meaning of Art 83. Instead, the board must evaluate sufficiency based on the disclosure of the application as filed and the skilled person’s CGK.
On the substance
During the OP before the board, the ambiguities in claim 1 regarding Figures 10 and 14, as well as the roles of the output filter, the digital loop filter, the way in which feedback is provided to the “ADC” and the link between the “ASC” and “any other components”, were discussed.
The board noted that the application as filed made no mention of the “transducer” incorporating the “output filter”. More importantly, claim 1 defines the “output filter” and the “transducer” as two distinct components.
Since a claim must be read in a technically sensible way, it follows in the board’s view, that the explicit structural separation of the features defined in claim 1 cannot be ignored.
The board held that it is impossible for the skilled person to reconcile the functional constraints of claim 1 with the disparate wiring diagrams of Figure 10 and Figure 14 of the present application.
Hence, the disclosure was not sufficient.
Comments
According to Article 27(1) PCT, no national office is permitted to require compliance with requirements relating to form or contents of the application over and above those set out in the PCT; however, according to Article 27(5) PCT, nothing in the PCT is intended to prescribe any substantive conditions of patentability.
For instance before the EPO entry in the regional phase can be delayed up to 31 months from the earliest priority date, whereas a EPC direct applicant has to request examination at the latest 6 months after publication of the ESR, nowadays, in general after 24 months.
For instance in T 735/03, Reasons 2.3, it was held that amendments filed during the international phase have to comply with the substantive requirements of the EPC, esp. Art 123(2).
The PCT is not deciding upon grant of a patent. This is reserved to national or regional patent offices.
Banking on the PPH or on the PCT has not been helping the applicants. Neither the PPH nor the PCT imply any mutual recognition of the outcome in one of the offices participating in the PPH scheme or in a member state of the PCT.
I have often seen applicants from outside Europe telling an ED that they got certain claims granted in their country of origin and wanted the sme in Europe. This has no implications whatsoever in proceedings before the EPO.
It is rather odd for a qualified representative to could come up with such an avalanche of fallacious argumentations.
On the other hand, it is well known that the skilled person is hyper intelligent and can fill any gaps in the disclosure or between documents. In general it is the opponent which brings this forward. For applicants and proprietors the skilled person is as thick as two planks. The result is the same: unconvincing.
Comments
4 replies on “T 0658/24-Each grant procedure is autonomous”
@ Daniel X. Thomas,
Your last paragraph reminded me of an Internet meme (rather, an Internet meme-like image) I saw once:
The skilled person when I am the opponent: for sufficiency of disclosure – photograph of Mr. Bean; for inventive step – photograph of the 1927 Solvay conference.
The skilled person when I am the patentee: for sufficiency of disclosure – photograph of the 1927 Solvay conference; for inventive step – photograph of Mr. Bean.
I thought this meme summed things up nicely and was funny to boot, but sadly I can’t find it anymore.
@ Extraneous Attorney
To join you in the way the opponent and the proprietor haven in general quite opposite ideas on the capability of the skilled person, during lectures, I often express the opinion that
– for the opponent the skilled person is superintelligent and would combine any piece of prior art with any piece of prior art to arrive at the claimed invention and
– conversely, for the proprietor, the skilled person is as thick as two planks and would not even know that 2+2=4.
On a more serious topic though, you state:
> “Banking on the PPH or on the PCT has not been helping the applicants. Neither the PPH nor the PCT imply any mutual recognition of the outcome in one of the offices participating in the PPH scheme or in a member state of the PCT.”
The second sentence is of course true, but I tend to disagree with the first sentence from a practical view, as regards the PPH. At least from the r/patentexaminer subreddit, it seems that USPTO examiners (which are the overwhelming majority of the posters there) have fewer “counts” = less examination time for applications in the PPH. They are effectively incentivized to allow, not reject, an application in the PPH.
@ Extraneous Attorney
The PPH does not yet mean mutual recognition of decisions to grant. It helps mainly in that a file can be propelled to the top of the pile of requests to grant. Every patent office has an autonomous right to decide. This is the more so, that the legal rules might be different in different countries, and even if they are the same, their interpretation might be different.
In T 735/03, it was held that amendments filed during the PCT international phase have to comply with the substantive requirements of the EPC, esp. Art 123(2). The IPEA had accepted amendments which were not accepted by the EPO.
In T 0106/06, the board reminded that, in the European phase of an application, the EPA is not legally bound to the ISA’s or the IPEA’s view on the patentability expressed in the international phase. The question at stake there was unityof invention.
What applies for the PCT in substantial matters, applies mutatis mutandis to the PPH in substantial matters.
That the upper management of patent offices is very creative when it comes to increasing production/productivity of examiners is an acquired fact. That the PPH could help towards this aim is thus not a surprise. Whether it is correct or fair is a different issue.